UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT ______

Nos. 23-1273 and 23-1281 ______

KARS 4 KIDS INC.

v.

AMERICA CAN! (D.N.J. No. 3-14-cv-07770)

AMERICA CAN! CARS FOR KIDS

v.

KARS 4 KIDS INC. (D.N.J. No. 3-16-cv-04232)

KARS 4 KIDS, INC., Appellant in No. 23-1273 AMERICA CAN! and AMERICA CAN! CARS FOR KIDS, Appellants in No. 23-1281 ______

On Appeal from the United States District Court for the District of New Jersey (D.C. Nos. 3-14-cv-07770 and 3-16-cv-04232) District Judge: Honorable Peter G. Sheridan ______

Argued December 12, 2023 Before: BIBAS, PORTER, and FISHER, Circuit Judges.

(Filed: April 17, 2024) Upnit K. Bhatti Orrick Herrington & Sutcliffe 2100 Pennsylvania Ave, N.W. Washington, DC 20037 Alexandra Bursak Christopher Cariello [ARGUED] Orrick Herrington & Sutcliffe 51 W 52nd Street New York, NY 10019 Marc D. Haefner Walsh Pizzi O'Reilly & Falanga Three Gateway Center 100 Mulberry Street, 15th Floor Newark, NJ 07102 Jonathan Z. King, Esq. Cowan Liebowitz & Latman 114 W 47th Street 21st Floor New York, NY 10036 Counsel for Appellant in No. 23-1273

2 Karen A. Confoy Corinne M. Trainor Fox Rothschild 997 Lenox Drive Princeton Pike Corporate Center, Building 3 Lawrenceville, NJ 08648 Christopher R. Kinkade Pierson Ferdinand 100 Overlook Center 2nd Floor Princeton, NJ 08054 Aubrey N. Pittman [ARGUED] The Pittman Law Firm 901 Main Street Suite 3670 Dallas, TX 75202 Counsel for Appellants in No. 23-1281

3 OPINION OF THE COURT

FISHER, Circuit Judge. “1-877 Kars for Kids, K-A-R-S Kars for Kids . . . donate your car today” has become a familiar musical jingle, and the question before us is whether Kars 4 Kids, Inc. has the right to use it in the state of Texas.1 This long-running trademark dispute has returned to this Court for the second time. Kars 4 Kids, Inc. and America Can! Cars for Kids sued one another for infringing on their respective marks. A jury found that Kars 4 Kids infringed on America Can’s unregistered mark in Texas. The District Court awarded monetary and injunctive relief. We affirmed in part, but vacated and remanded for the District Court to reexamine its conclusion that the doctrine of laches did not bar America Can’s claims. On remand, the District Court’s reexamination led it to the same conclusion: that laches did not bar relief. We disagree. Because the District Court abused its discretion by again not properly applying the presumption in favor of laches, and because laches bars both monetary and injunctive relief here, we will vacate and remand with instructions to dismiss America Can’s claims with prejudice. We will dismiss as moot America Can’s cross-appeal. I. A. Factual Background2 America Can and Kars 4 Kids are both charities that sell donated vehicles to fund children’s education programs.

1 https://archive.org/details/youtube-ybJ6fS7ruuo. 2 The history of this case was discussed extensively in our prior decision. See Kars 4 Kids Inc. v. Am. Can!, 8 F.4th 209 (3d Cir. 2021). We repeat the most salient facts here.

4 Texas-based America Can began operations in the late 1980s. In 1989, it started using the name “Cars for Kids” in advertising campaigns. Beginning in the 1990s, America Can used that name in advertisements played on a Dallas-area radio station and in print advertisements in regional publications. During the same period, the Dallas Morning News ran articles and colum